DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This is a final office action for application 17/546,420 in response to the amendment(s) filed on 08/21/2025. Claims 1 and 7-13 are under examination.
Response to Arguments
Applicant’s arguments filed on 08/21/2025 have been fully considered but are not found persuasive.
Applicant amended independent claim 1 to include additional limitations regarding (i) spherical particle morphology, (ii) average particle size of 250–350 nm, (iii) packing density of at least 1.5 g/cm³, and (iv) BET specific surface area of 25 m²/g or less. Applicant contends that Kang et al. and Kwon et al., alone or in combination, fail to disclose or suggest the claimed coordinated parameter set, and further argues that conventional electrode design trends away from such parameters. Applicant further relies on the instant specification and comparative examples as “evidence” of improved performance. These arguments are not persuasive for the following reasons:
Lack of Persuasive Evidence Regarding Inherency
Applicant asserts that Kang and Kwon fail to disclose the claimed properties of the carbon material. However, applicant has not provided any evidence that the carbon materials explicitly disclosed by Kang (e.g., furnace black, acetylene black, Ketjen black, carbon black, graphene) would not inherently possess one or more of the claimed properties, including conductivity, packing density, BET surface area, pore volume, or particle aggregation behavior. The burden is on applicant to demonstrate that the prior art carbon materials necessarily differ in structure or composition such that they would not inherently possess the claimed characteristics. Mere argument unsupported by factual evidence is not sufficient. See MPEP 2112 (V).
Specification-Based “Evidence” Is Not Prior Art Evidence
Applicant relies on Table 1 and FIG. 6 of the instant application to show comparative performance of certain carbon materials. However, data contained in applicant’s own specification does not establish that the prior art materials lack the claimed properties. At most, such data demonstrates that applicant’s selected embodiments may achieve certain electrochemical results; it does not establish that the prior art materials inherently lack the claimed structure or properties. When claimed and prior art products are identical or substantially identical in structure or composition, properties are presumed to be the same or inherent. See MPEP 2112.01 (I).
Overlapping and Encompassed Ranges
Applicant’s argument that the claimed ranges are not taught or suggested is also not persuasive. Kang expressly discloses particle sizes of 10 nm to 4 μm (see e.g. paragraph [0043] of Kang), which encompasses applicant’s claimed sub-range of 250–350 nm. In the case where the prior art discloses a range that encompasses the claimed range, a prima facie case of obviousness exists. See MPEP 2144.05(I). The burden shifts to applicant to demonstrate criticality of the particular range through evidence of unexpected results. Applicant has not provided persuasive evidence of criticality tied to the specific claimed sub-range beyond the specification itself, which as explained above is insufficient to overcome inherency.
Applicant’s “Teaching Away” Argument Not Persuasive
Applicant argues that conventional design favors high conductivity and large interfacial area, which would allegedly discourage a skilled artisan from pursuing low-conductivity, low-surface-area carbons. This argument is not persuasive. First, Kang itself teaches amorphous carbons with a wide range of conductivity values, and applicant has not shown that carbons such as furnace black inherently fall outside the claimed conductivity. Second, Kwon expressly discloses spherical carbons with reduced surface area, contradicting applicant’s assertion that such designs would be avoided. The references therefore provide a reasoned motivation toward the claimed properties.
In conclusion, the prior art of record still teaches or renders obvious the subject matter of amended claim 1 and dependent claims 7-13. Due to the amendments the USC 102 rejection has been withdrawn, however, in light of the amendments and the response to arguments above claims 1 and 7-13 are now rejected under USC 103 under Kang in view of Kwon. Furthermore, a new USC 112(a) Enablement rejection has been made for claims 1 and 7-13. See claims 1 and 7-13 rejections below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 7-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claims recite an anode comprising a carbon material defined by multiple interdependent physical property limitations, including that the carbon material consists of spherical primary particles that do not agglomerate, having an average particle diameter of 250–350 nm, an electrical conductivity of 30 S/m or less, a packing density of 1.5 g/cm³ or greater, and a BET specific surface area of 25 m²/g or less.
The specification, however, fails to provide sufficient guidance enabling a person of ordinary skill in the art to make and use such a carbon material without undue experimentation. While the claims require a narrowly defined (i.e. properties) carbon material, the specification is silent as to what the carbon material within the anode is and merely provides property data in Table 1 without disclosing the identity of the actual carbon material used or how such a material is synthesized or processed. The specification does not disclose any methods or processing conditions that would reliably yield a carbon material having the claimed combination of particle size, shape, conductivity, packing density, and surface area.
In determining whether undue experimentation would be required, the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988), are considered:
(A) Breadth of the claims: The claims broadly cover carbon materials defined only by functional/physical properties, without limitation to a particular carbon type or preparation method. The scope therefore includes a wide variety of carbons, only a subset of which may satisfy the claimed properties. This weighs against enablement.
(B) Nature of the invention: The invention depends on a very specific combination of particle morphology and physical properties. Producing carbons with such characteristics requires careful control of synthesis or processing. The disclosure contains no teaching on how to achieve these properties. This weighs against enablement.
(C) State of the prior art: Although carbons such as graphite and carbon black are known, the art does not establish well-known methods to produce spherical, non-agglomerated particles simultaneously meeting the claimed conductivity, density, and surface area. This weighs against enablement.
(D) Level of ordinary skill in the art: A person of ordinary skill would be familiar with general carbon materials and testing methods, but not with how to reliably obtain carbons meeting the claimed requirements absent specific disclosure. This weighs against enablement.
(E) Predictability or unpredictability of the art: The art is unpredictable because small changes in synthesis strongly affect conductivity, morphology, and surface area. This weighs against enablement.
(F) Amount of direction provided by the inventor: The specification does not identify the actual carbon used, provides no synthesis method, and does not disclose how the claimed properties were obtained. This weighs heavily against enablement.
(G) Presence or absence of working examples: No enabling examples are disclosed. The property table does not identify the actual carbon or its preparation and the example disclosed does not identify the actual carbon used, provides no synthesis method, and does not disclose how the claimed properties were obtained. This weighs against enablement.
(H) Quantity of experimentation necessary: A person of ordinary skill in the art would need to perform extensive trial and error experimentation to obtain carbons meeting all the claimed properties. Such experimentation would not be routine but would constitute undue experimentation. This weighs against enablement.
Considering the Wands factors as a whole, the disclosure does not reasonably teach a person of ordinary skill in the art how to make and use the claimed carbon material without undue experimentation. Accordingly, claims 1 and 7–13 are not enabled.
Claim Rejections - 35 USC § 103
Claims 1 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (US-2020/0185768-A1) and further in view of Kwon et al. (A simple preparation method for spherical carbons and their anodic performance in lithium secondary batteries, 14 January 2004, Journal of Power Sources, Volume 125 Issue 2).
Regarding Claim 1, Kang discloses an anode for an all-solid-state battery (see e.g. "anode" in Abstract and part number 20 in FIG. 1) comprising: an anode current collector (see e.g. "anode current collector" in paragraph [0007] and part number 21 in FIG. 1); and a layer disposed on the anode current collector (see e.g. "first anode active material layer" in paragraph [0007] and part number 22 in FIG. 1) and comprising a carbon material (see e.g. "The carbonaceous anode active material may be, for example, amorphous carbon. For example, the amorphous carbon may be carbon black (“CB”), acetylene black (“AB”), furnace black (“FB”), Ketjen black (“KB”), or graphene." in paragraph [0045] and "Furnace black (“FB-C”)" in Example 1 paragraph [0097]) and a metal capable of being alloyed with lithium (see e.g. "For example, the anode active material of the first anode active material layer 22 may further include a carbonaceous anode active material; a metal, metalloid anode active material, or a combination thereof; or a combination thereof." in paragraph [0044] and "The metal, metalloid anode active material, or a combination thereof may include gold (Au), platinum (Pt), palladium (Pd), silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), antimony (Sb), magnesium (Mg), zinc (Zn), or a combination thereof." in paragraph [0046]; Au, Pt, Pd, Si, Ag, Al, Bi, Sn, Ab, Mg and Zn are all capable of being alloyed with lithium. see also "silver (Ag) particles" in Example 1 paragraph [0097]).
With regards to the claim limitation "wherein the carbon material comprises a plurality of primary particles that do not agglomerate" the applicant does not provide a definition within the instant specification of what it means for a particle to be a non-agglomerating primary particle. Using what is provided within the disclosure the examiner has to come up with the broadest reasonable interpretation as to what a non-agglomerating primary particle is. The applicant provides FIG. 3A as an exemplary embodiment of the invention (which includes the non-agglomerating primary particles), however, within this figure the particles appear to be touching one another and forming large clusters leading to the broadest reasonable interpretation of non-agglomerating primary particles being that these particles can be touching and forming clusters. Furthermore, practical limitations in nanoscale systems make complete non-agglomeration unrealistic, which further strengthens the broadest reasonable interpretation of a non-agglomerating primary particle to mean particles that can touch and form in large clusters. Kang does not explicitly disclose that the carbon material comprises a plurality of primary particles that do not agglomerate. However, Kang refers to the carbon particles as "primary" particles (see e.g. "Furnace black (“FB-C”) having a primary particle diameter" in Example 1 paragraph [0097]). Kang also discloses that the first anode active material layer may be formed by coating, on the anode current collector a slurry in which ingredients (i.e., the carbon particles) of the first anode active material layer are dispersed (see e.g. paragraph [0050] of Kang) and that the anode active material layer may further include a dispersion agent (see e.g., paragraph [0055] of Kang), both of which implicitly teach non-agglomerating particles. Furthermore, Kang discloses a carbon particles that has no compositional or structural distinction to the carbon particle claimed in the instant application. Because of this non-agglomeration would be inherent and thus a prima facie case of obviousness exists. See MPEP 2112 (III) and MPEP 2112.01 (I).
With regards to the claim limitation "wherein lithium ions are deposited and stored in a form of lithium metal between the layer and the anode current collector during charging of the all-solid-state battery" such language is functional and describes an expected behavior of the disclosed battery structure. Apparatus claims are defined as what a device is not what a device does. See MPEP 2114 (II). The functional language does not impose any structural limitation beyond what is already disclosed by Kang. Moreover, Kang further teaches that lithium moves from the cathode to the anode during charging and that lithium deposits between the anode current collector and the first anode active material layer (see e.g. "the anode active material in the first anode active material layer may form an alloy or compound with lithium ions moved from the cathode layer." and "When the all-solid secondary battery is charged over the capacity of the first anode active material layer, for example, lithium may be precipitated on a rear surface of the first anode active material layer, i.e., between the anode current collector and the first anode active material layer" in paragraph [0063]). Thus, it would be expected by a person of ordinary skill in the art that lithium ions are deposited and stored in a form of lithium metal between the layer and the anode current collector during charging of the all-solid-state battery.
Kang further discloses that the first anode active material layer is in the form of particles that the particles may have an average particle diameter of 10 nm to about 4 μm (see e.g. "The anode active material of the first anode active material layer 22 may be, for example, in the form of particles...the anode active material in the form of particles may have an average particle diameter of about 10 nm to about 4 μm, about 10 nm to about 3 μm, about 10 nm to about 2 μm, about 10 nm to about 1 μm, or about 10 nm to about 900 nm." in paragraph [0043]).
Kang discloses a range that encompasses the range claimed by the instant application. In the case where the prior art discloses a range that encompasses the claimed range, a prima facie case of obviousness exists. See MPEP 2144.05 (I).
Kang is silent as to the shape of the carbon material and thus does not disclose that the carbon material comprises spherical particles. Kwon, however, in the same field of endeavor, carbon particles for use as active materials in lithium secondary batteries, discloses a method for producing spherical carbon particles (see e.g. Abstract and Section 3.1 Preparation of Spherical Carbons of Kwon).
Kwon further teaches that using spherical carbon particles exhibits a higher tap density and smaller surface area than those of the irregular-shaped ones, which is an advantageous feature for practical lithium batteries (see e.g. Abstract of Kwon). Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to use the teachings of Kwon in order to increase the tap density and lower the surface area of the carbon particles as taught by Kwon.
With regards to the claim limitations "wherein the carbon material has an electrical conductivity of about 30 S/m or less, wherein the carbon material has a packing density of about 1.5 g/cm3 or greater, wherein the carbon material has a BET specific surface area of about 25 m2/g or less" Kang in view of Kwon is silent to the electrical properties of the carbon material used, and thus does not explicitly disclose that the carbon material has an electrical conductivity of about 30 S/m or less, a packing density of about 1.5 g/cm3 or greater and a BET specific surface area of about 25 m2/g or less. Kang in view of Kwon, however, discloses a carbon particle that has no compositional or structural distinction the carbon particle claimed in the instant application. Because of this an electrical conductivity of about 30 S/m or less, a packing density of about 1.5 g/cm3 or greater and a BET specific surface area of about 25 m2/g or less would be inherent properties of the carbon particle and thus a prima facie case of obviousness exists. See MPEP 2112 (III) and MPEP 2112.01 (I).
Regarding Claim 7, Kang in view of Kwon discloses the anode according to claim 1 (see claim 1 rejection above). Kang in view of Kwon is silent as to the properties of the carbon material and thus does not disclose that a total pore volume of the carbon material, obtained through nitrogen adsorption isotherm measurement, is about 0.001 cm3/g to 0.4 cm3/g. Kang in view of Kwon, however, discloses a carbon particle that has no compositional or structural distinction the carbon particle claimed in the instant application. Because of this a total pore volume of the carbon material, obtained through nitrogen adsorption isotherm measurement, being about 0.001 cm3/g to 0.4 cm3/g would be an inherent property of the carbon particle and thus a prima facie case of obviousness exists. See MPEP 2112 (III) and MPEP 2112.01 (I).
Regarding Claim 8, Kang in view of Kwon discloses the anode according to claim 1 (see claim 1 rejection above). Kang further discloses that the metal comprises one or more from the group consisting of gold (Au), platinum (Pt), palladium (Pd), silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (see e.g. "The metal, metalloid anode active material, or a combination thereof may include gold (Au), platinum (Pt), palladium (Pd), silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn)... zinc (Zn), or a combination thereof." in paragraph [0046]).
Regarding Claim 9, Kang in view of Kwon discloses the anode according to claim 1 (see claim 1 rejection above). Kang further discloses that the composite layer further comprises a binder (see e.g. "The first anode active material layer may include, for example, a binder" in paragraph [0049]), and the first anode active material layer comprises the carbon material and the metal in a 3:1 ratio (see e.g. "Mixed powder of furnace black (“FB-C”) and silver particles in a weight ratio of about 3:1, and lithium chloride powder were used to form an anode layer." in paragraph [0098]). Kang also discloses that the amount of lithium chloride was about 10 wt% and the amount of binder was 6 wt% (see e.g. "In the first anode active material layer, an amount of the lithium chloride was about 10 wt %, and an amount of the binder was about 6 wt %." in paragraph [0099]). If the amount of lithium chloride is 10 wt% and the amount of binder is 6 wt% then the remaining wt% of the active material layer must be the 3:1 ratio of the carbon material to the metal (furnace black to silver). Thus 100 wt% - 10 wt% - 6 wt% = 84 wt% remaining, 84 wt% / 4 = 21 wt%. Therefore, the amount of carbon material (furnace black) would have to be 21 wt% * 3 = 64 wt% and the amount of metal would have to be the remaining 21 wt%.
Kang discloses a point that lies within the range claimed by the instant application. In the case where the prior art discloses a point within the claimed range, a prima facie case of obviousness exists. See MPEP 2144.05 (I).
Regarding Claim 10, Kang in view of Kwon discloses an all-solid-state battery (see e.g. "an all-solid secondary battery" in paragraph [0007] and FIG. 1) comprising: a cathode (see e.g. "cathode" in paragraph [0007] and part number 10 in FIG. 1); an anode according to claim 1 (see claim 1 rejection above); and a solid electrolyte layer interposed between the anode and the cathode (see e.g. "a solid electrolyte layer between the anode and the cathode" in paragraph [0007] and part number 30 in FIG. 1), wherein the solid electrolyte layer is stacked such that the solid electrolyte layer contacts a composite layer of the anode (see e.g. part number 30 in FIG. 1; the solid electrolyte layer is in direct contact with the anode active material layer).
Regarding Claim 11, Kang in view of Kwon discloses a vehicle (see e.g. "the all-solid secondary battery according to an embodiment may be applicable in different types of portable devices or vehicles." in paragraph [0138]) comprising a battery of claim 10 (see claim 10 rejection above).
Regarding Claim 12, Kang in view of Kwon discloses the anode according to claim 1 (see claim 1 rejection above). Kang discloses methods for preparing the anode layer in which he teaches using a binder to suppress the formation of agglomerates within the active material layer during screen printing (see e.g. paragraph [0050] and claim 1 rejection above).
Regarding Claim 13, Kang in view of Kwon discloses the all-solid-state battery according to claim 10 (see claim 10 rejection above). Kang discloses methods for preparing the anode layer in which he teaches using a binder to suppress the formation of agglomerates within the active material layer during screen printing (see e.g. paragraph [0050] and claim 1 rejection above).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSE EFYMOW whose telephone number is (571)270-0795. The examiner can normally be reached Monday - Thursday 10:30 am - 8:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milton Cano can be reached at (313) 446-4937. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.J.E./Examiner, Art Unit 1723
/MILTON I CANO/Supervisory Patent Examiner
Art Unit 1723